People for Ethical Treat. of Animals v. Doughney

• Decision Date: 12 June 2000
• Docket Number: No. CIV.A. 99-1336-A.,CIV.A. 99-1336-A.
• Citation: 113 F.Supp.2d 915
• Court: U.S. District Court — Eastern District of Virginia
• Parties: PEOPLE FOR THE ETHICAL TREATMENT OF ANIMALS, INC., Plaintiff, v. Michael T. DOUGHNEY, Defendant.

113 F.Supp.2d 915

PEOPLE FOR THE ETHICAL TREATMENT OF ANIMALS, INC., Plaintiff, v. Michael T. DOUGHNEY, Defendant.

No. CIV.A. 99-1336-A.

United States District Court, E.D. Virginia, Alexandria Division.

June 12, 2000.

COPYRIGHT MATERIAL OMITTED

David Neil Ventker, Huff, Poole & Mahoney, P.C., Virginia Beach, VA, for People for Ethical Treatment of Animals, Inc., plaintiff.

Richard Taylor Rossier, McLeod, Watkinson & Miller, Washington, DC, for Michael T. Doughney, defendant.

MEMORANDUM OPINION

HILTON, Chief Judge.

This matter comes before the Court on Plaintiff's Motion for Partial Summary Judgment and Renewed Motion to Strike, Plaintiff's Motion for Summary Judgment and Defendant's Motion for Summary Judgment. The parties agree that there are no issues of material fact in dispute and this case may be decided on the motions for summary judgment.

This lawsuit arose from a dispute between Plaintiff, People for the Ethical Treatment of Animals ("PETA"), and Defendant, Michael Doughney ("Doughney"), regarding the use of the internet domain name "PETA.ORG." PETA is a non-profit, charitable corporation established in August 1980. PETA has affiliated animal protection organizations in the United Kingdom, Germany, the Netherlands and India who all operate under the name PETA. On August 4, 1992, PETA was given U.S. Trademark Registration Number 1,705,510 duly issued by the United States Patent and Trademark Office for the service mark "PETA" for "educational services; namely providing programs and seminars on the subject of animal rights welfare," and, "promoting the public awareness of the need to prevent cruelty and mistreatment of animals." PETA has used the PETA trademark and trade name continuously in interstate commerce and foreign commerce since 1980.

Defendant, Michael Doughney ("Doughney"), registered many domain names in September 1995, including "PETA.ORG." At that time, PETA had no web sites of its own. Doughney registered "PETA.ORG" with Network Solutions, Inc. for "People Eating Tasty Animals" which he represented to Network Solutions, Inc. was a non-profit organization. No such organization was in existence at the time of the registration of the web site or since that time. Doughney also represented to Network Solutions, Inc. that the name "PETA.ORG" "does not interfere with or infringe upon the rights of any third party."

Doughney's "PETA.ORG" web site contained information and materials antithetical to PETA's purpose. When in operation, "www.peta.org" contained the following description of the web site: "A resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research." There were over thirty links on the web site to commercial sites promoting among other things the sale of leather goods and meats. Until an internet user actually reached the "PETA.ORG" web site, where the screen read "People Eating Tasty Animals," the user had no way of knowing that the "PETA.ORG" web site was not owned, sponsored or endorsed by PETA.

On January 29, 1996, PETA send Doughney a letter requesting that he relinquish his registration of the "PETA.ORG" name because "it uses and infringes upon the longstanding registered service mark of People for the Ethical Treatment of Animals, whose service mark `PETA' currently is in full force and effect."

PETA then complained to Network Solutions, Inc. and on or about May 2, 1996, Network Solutions, Inc. placed the "PETA.ORG" domain name on "hold" status. Pursuant to Network Solutions, Inc.'s "hold" status designation, the "PETA.ORG" domain name may not be used by any person or entity. After "PETA.ORG" was put on "hold" status, Doughney transferred the contents of that web site to the internet address "www. mtd.com/tasty."

PETA brought this suit alleging claims for service mark infringement in violation of 15 U.S.C. § 1114 (Count I), unfair competition in violation of 15 U.S.C. § 1125(a) and Virginia common law (Counts II and VI), service mark dilution and cybersquatting in violation of 15 U.S.C. § 1125(c)(Count VII). PETA has voluntarily withdrawn Counts III, IV and V of its Amended Complaint. Doughney claims there is no infringement because its web site is a parody. PETA has dropped its claim for damages and seeks the following equitable relief: to enjoin Doughney's unauthorized use of its registered service mark "PETA" in the internet domain name "PETA.ORG," to force Doughney's assignment of the "PETA.ORG" domain name to PETA.

Summary Judgment is appropriate where there is no genuine issue as to any material fact. See FED. R. CIV. P. 56(c). Once a motion for summary judgment is properly made and supported, the opposing party has the burden of showing that a genuine dispute exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A material fact in dispute appears when its existence or non-existence could lead a jury to different outcomes. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A genuine issue exists when there is sufficient evidence on which a reasonable jury could return a verdict in favor of the non-moving party. See id. Mere speculation by the non-moving party "cannot create a genuine issue of material fact." Beale v. Hardy, 769 F.2d 213, 214 (4th Cir.1985); See also Ash v. United Parcel Serv., Inc., 800 F.2d 409, 411-12 (4th Cir.1986). Summary judgment is appropriate when, after discovery, a party has failed to make a "showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When a motion for summary judgment is made, the evidence presented must always be taken in the light most favorable to the non-moving party. See Smith v. Virginia Commonwealth Univ., 84 F.3d 672, 675 (4th Cir. 1996)(en banc). This case is ripe for Summary Judgment as all the evidence is before the Court and the facts are undisputed.

To make out a case for service or trade mark infringement and/or unfair competition, a Plaintiff must prove the following elements: (1) that Plaintiff possesses a Mark; (2) that Defendant uses the Plaintiff's Mark; (3) that such use occurs in commerce; (4) in connection with the sale or offering for sale, distribution, or advertising of goods or services; and (5) in a way that is likely to cause confusion among consumers. 15 U.S.C. §§ 1114, 1125(a). Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922, 930 (4th Cir.1995).

First, PETA owns the PETA Mark and Defendant admits the PETA Mark's validity and incontestability. The PETA Mark is thus presumed to be distinctive as a matter of law. Jews for Jesus v. Brodsky, 993 F.Supp. 282, 295 (D.N.J.1998), aff'd 159 F.3d 1351 (3rd Cir.1998); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 497(2nd Cir.). Second, Doughney used the identical PETA Mark to register "PETA.ORG" and posting a web site at the internet address "www. peta.org." Third, Doughney admits that his use of the PETA Mark was "in commerce."

The fourth element requires that Defendant's use of the PETA Mark be made in connection with the sale, distribution, or advertising of goods or services. This does not require that Defendant actually caused goods or services to be placed into the stream of commerce. Jews for Jesus, 993 F.Supp. at 309. The term "services" has been interpreted broadly to include the dissemination of information, including purely ideological information. United We Stand America, Inc. v. United We Stand America New York, 128 F.3d 86, 89-90 (2nd Cir.1997) (citations omitted). Defendant's use of the PETA Mark was "in connection" with goods and services because the use of a misleading domain name has been found to be "in connection with the distribution of services" when it impacts on the Plaintiff's business:

[I]t is likely to prevent Internet users from reaching [PETA]'s own Internet web site. The prospective users of [PETA]'s services who mistakenly access Defendant's web site may fail to continue to search for [PETA]'s own home page, due to anger, frustration, or the belief that the Plaintiff's home page does not exist

Planned Parenthood Federation of America v. Bucci, 42 U.S.P.Q.2d 1430, 1435 (S.D.N.Y.); Jews for Jesus, 993 F.Supp. at 309. In addition, the "PETA.ORG" web site contained over thirty separate hyperlinks to commercial operations offering goods and services, including fur, leather, magazines, clothing, equipment and guide services. Under the law, even one such link is sufficient to establish the commercial use requirement of the Lanham Act. Jews for Jesus, 993 F.Supp. at 308-09; Planned Parenthood, 42 U.S.P.Q.2d at 1435.

Last, Defendant's use of PETA's Mark did cause confusion. Doughney copied the Mark identically. This creates a presumption of likelihood of confusion among internet users as a matter of law. New York State Society of Certified Public Accountants v. Eric Louis Associates, Inc., 79 F.Supp.2d 331, 340 (S.D.N.Y.1999). In addition, there was evidence of actual confusion by those using the internet who were trying to locate PETA and instead found Doughney's web site.

Doughney's web site certainly dilutes the Mark of PETA. To win on summary judgment for a claim for dilution under 15 U.S.C. § 1125(c)(1), Plaintiff must show that the undisputed facts demonstrate that Defendant's use of "PETA.ORG" diluted the PETA Mark's distinctive quality. Dilution is "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake or deception." 15 U.S.C. § 1127; Ringling Bros. v. Utah Division of Travel, 170 F.3d 449, 452 (4th Cir.1999). Dilution can occur by "tarnish...